Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88097293 PRIMER(Standard Characters, see http://uspto.report/TM/88097293/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

This responds to the Office Action issued June 11, 2020 for U.S. Serial No. 88097293 for the mark PRIMER. The Examining Attorney has objected to the specimen of use submitted on May 1, 2020, arguing that the specimen lacks the required URL and/or date printed/accessed. In response, Applicant is herein submitting screenshots of its website, this time displaying the URLs and date accessed. Additionally, Applicant submits that the specimens of use previously submitted for Class 9 included screenshots of the App Store where the software can be downloaded, and that these screenshots are acceptable. Nevertheless, the specimens being submitted herein are screenshots of Applicant's website which also show links to the App Store where the software can be downloaded.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable mobile applications featuring software to assist the user with DIY projects, home repair, home maintenance, home décor and home improvement projects
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

In International Class 009, the mark was first used at least as early as 09/11/2019 and first used in commerce at least as early as 09/11/2019.


Proposed:
Class 009 for Downloadable mobile applications featuring software to assist the user with DIY projects, home repair, home maintenance, home décor and home improvement projects

Deleted Filing Basis: 1(b)
In International Class 009, the mark was first used at least as early as 09/11/2019 . and first used in commerce at least as early as 09/11/2019 .

Applicant hereby submits one(or more) specimen(s) for Class 009. The specimen(s) submitted consists of Screenshot of webpage available at http://www.primer.com/ captured on August 23, 2020 displaying mark in connection with the goods..
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Specimen File1

Applicant proposes to amend the following:

Current:
Class 041 for Providing on-line video tutorials in the field of home repair, home maintenance, DIY home improvement projects
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

In International Class 041, the mark was first used at least as early as 09/11/2019 and first used in commerce at least as early as 09/11/2019.


Proposed:
Class 041 for Providing on-line video tutorials in the field of home repair, home maintenance, DIY home improvement projects

Deleted Filing Basis: 1(b)
In International Class 041, the mark was first used at least as early as 09/11/2019 . and first used in commerce at least as early as 09/11/2019 .

Applicant hereby submits one(or more) specimen(s) for Class 041. The specimen(s) submitted consists of Screenshots of webpages available at http://www.primer.com/platform and http://www.primer.com/ captured on August 23, 2020 displaying the mark in connection with the services..
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU1-4722721062-202008231 62356695284_._PRIMER_spec imen_4.pdf
Converted PDF file(s) ( 7 pages) Specimen File1Specimen File2Specimen File3Specimen File4Specimen File5Specimen File6Specimen File7
Original PDF file:
SPU1-1-4722721062-2020082 3162356695284_._PRIMER_sp ecimen_3.pdf
Converted PDF file(s) ( 5 pages) Specimen File1Specimen File2Specimen File3Specimen File4Specimen File5
Correspondence Information (current):
      Julia Spoor Gard
      PRIMARY EMAIL FOR CORRESPONDENCE: jgard@btlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): TMINDocket@btlaw.com; eross@btlaw.com

The docket/reference number is 76564-285699.
Correspondence Information (proposed):
      Julia Spoor Gard
      PRIMARY EMAIL FOR CORRESPONDENCE: jgard@btlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): TMINDocket@btlaw.com; eross@btlaw.com; bssmith@btlaw.com

The docket/reference number is 76564-285699.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /bssmith/      Date: 08/23/2020
Signatory's Name: Brittany S. Smith
Signatory's Position: Attorney, Barnes & Thornburg LLP, Indiana Bar Member
Signatory's Phone Number: 317-236-1313


Response Signature
Signature: /bssmith/     Date: 08/23/2020
Signatory's Name: Brittany S. Smith
Signatory's Position: Attorney, Barnes & Thornburg LLP, Indiana Bar Member

Signatory's Phone Number: 317-236-1313

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Julia Spoor Gard
   BARNES & THORNBURG LLP
   
   11 SOUTH MERIDIAN STREET
   INDIANAPOLIS, Indiana 46204-3535
Mailing Address:    Julia Spoor Gard
   BARNES & THORNBURG LLP
   11 SOUTH MERIDIAN STREET
   INDIANAPOLIS, Indiana 46204-3535
        
Serial Number: 88097293
Internet Transmission Date: Sun Aug 23 17:27:23 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020082317272355
7990-88097293-7408f2842717bc77455e9486df
e5d6e05c5912b05834d56e22e524df41cab677f1
-N/A-N/A-20200823162356695284